The case filed by a Stock
market analyst Mr Deepak Manohar Mohoni on Bombay Stock Exchange (BSE)
challenging the trade mark application of BSE in Mumbai has attracted a
nationwide attention rising several issues on trade mark rights. Mr Mohoni has
contended that he was the original user of the term "SENSEX" and if any rights
are claimed on the term it should belong to him. On the other hand, BSE
contends that it has a "Trade Mark Right" on the term "SENSEX" and in
support of its contention claims that it has already obtained a trade mark
registration in USA.

We are all aware that BSE is
a large organization with a huge financial resource to fight its case upto the
highest Court in the country if required. At the same time we are not sure if
Mr Mohoni has the resources to pursue the case till the last resort. There is
therefore a danger of the case getting decided in favour of money power than
the merits of the case.

We therefore feel that
right thinking persons have a special role in supporting the cause of Mr
Mohoni so that BSE is not allowed to bulldoze its claim using its financial
clout, deep pockets and ability to fight a prolonged legal battle.

Naavi.org as a crusader of
the cause of the e-downtrodden requests support from the media and other
quarters for Mr Mohoni who has on record stated "... he does not have a
problem with anyone using the term, as long as no one claims exclusive rights
to it.".

Recently, when Naavi had to
take up a defense on behalf of a domain name registrant who had registered a
domain name "sensex.in" against an arbitration complaint raised by
BSE, it was
found that BSE had withheld several vital facts from the arbitrator which
could have affected its claims adversely in the arbitration. It had also not
revealed the existence of the objection raised by Mr Mohoni to the trade mark
application. It was through an RTI application that we were able to get this
information and include it in the defense. Now we are sceptical about BSE
being truthful in its submissions to the Court in the present dispute with Mr
Mohoni and hence it is necessary for us to place on record some of the
information we had gathered during the arbitration defense so that BSE is not
able to mis-represent facts.

The claim of BSE's move to
claim exclusive rights on the term "SENSEX" needs to be opposed for
various reasons including the following;

1. SENSEX is not a term
which is eligible for Trade Mark Registration

a) “SENSEX” can neither be considered as a “Product” or a “Service” of the
BSE.

b) SENSEX cannot be considered as an indicator of the quality of the
service rendered by the BSE.

c) The continuous use of SENSEX by the BSE is not unique.

d) SENSEX is a factual position of the share trading information
created out of the activities of the public in buying or selling shares, using
a publicly available formula.

e) The designing of the formula for calculating
SENSEX is not based on any proprietary Intellectual Property of the BSE but on
the scientific principles of how “Market Capitalization has to be adjusted
through weightages for facts such as the number of shares of a company
available for trading at a point of time compared to a base time. It is used
by several other stock exchanges also. The choice of the 30 shares out of the
5000 available shares is a decision based on the well known ABC principle of
management since these select shares contribute to the significant part of the
market capitalization and for active trading.

f) It is for this reason that if public buy the
shares of an index company at a rate less than what they were willing to buy
on the previous day, the SENSEX goes down. If there is more money available in
the market and the investors decide to buy a share at a price higher than
earlier, the SENSEX goes up. This is more a reflection of the investor
sentiments and not a reflection of the quality of service of BSE. SENSEX does
not indicate how good or bad the service of Bombay Stock Exchange is but only
tells how investors are feeling about investing or not investing in a given
group of share

g)
According to the admissions of BSE on
their website under the heading “SENSEX, the Barometer of Indian
Capital Markets”

i) “…SENSEX is scientifically designed … based on globally accepted
construction and review methodology”
ii) SENSEX is regarded to be the pulse of the Indian stock market

h) This nature of SENSEX as a mathematical calculation
based on facts which are in public domain and it not being a “Distinguishing
indicator of the quality of the service of the BSE” makes it in-eligible for
consideration as a trademark or a service mark or for establishing the rights
over its use by any member of public including the respondent.

i) As indicated by the BSE himself in his website, it
is accepted that “SENSEX is considered as a barometer of the Indian Capital
markets”. The facts about how SENSEX responds to global economic developments
such as “Changes in the Crude Oil Prices”, “US Sub Prime Crisis”, “Indian
National Budget proposals” or Political developments such as “Whether Senator
Obama will be the democratic candidate in US presidential elections” or
“Whether Indian Parliament will be dissolved ahead of its term” are well
documented by the press.

j) SENSEX is also subject to the universally accepted concept of
“Genericized Trademarks” . Genericized trademark is a trademark which
has come to be used to describe all similar products, rather than the product
of a specific manufacturer. Some well known examples of genericized trademarks
include kleenex, kotex, xerox, aspirin, heroin, crock pot, hoover, scotch
tape, and rolodex. All of these names are used generically to describe
particular products, despite the fact that they were once trademarked, and in
some cases still are trademarked.

m) By law, if a company does not take action to protect a
product from genericization, it may lose its trademark.

n) The word “SENSEX” has assumed the specific meaning of an
“Indicator of Stock market status” in general and is no longer considered only
to describe the movements of the 30 shares of the Bombay Stock Exchange used
for computing the SENSEX. In the specialized segments where the specific
reference is required, the term BSE-SENSEX is used instead of the mere word
SENSEX to distinguish between the BSE related index and the reflection of the
capital market situation in India.

o) The Concept of “Genericized Trademark” is reiterated in
the Indian Trademark Act 1999 under Section 9.1 (c ) which states as follows:

The Trade marks… “which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and established
practices of the trade,”..shall not be registered

The word “SENSEX” has acquired the character of a “Genericized Trademark” and
no trademark right can be recognized there in.

Issue 2 :
Registration of US Trademark

i. The BSE has indicatedthat a trademark (Service Mark) registration has been obtained in USA for
the mark “SENSEX” under the classes 16 and 36.

iv. The BSE does not have any
product or service under the classification in the exclusive name of “SENSEX”
either prior to the granting of the trademark or subsequently.

v. While it is conceded that
BSE has been using the term SENSEX since a long time, it has been used
frequently as BSE-SENSEX. Whenever the word is used simply as SENSEX, the
objective has been to reflect the general health of the capital market in
India.

vii. BSE has no right on the
term SENSEX as either a trademark or a service mark either in US or elsewhere
not withstanding the claimed registration which could be challenged in the
appropriate forum.

viii. It is also noted that
the trademark registration in USA was obtained by Bombay Stock Exchange,
(Association of Persons) which is an entity different from the current status
of the BSE.

x. The BSE has not recognized
SENSEX as a trademark in their books and there is no mention about the same
either in the balance sheet of 19th August 2005 (after the change of status of
BSE) nor the balance sheet for the year 2006-2007. No income has been
shown in the books of Bombay Stock Exchange Ltd under "Trademark" though
it is clear that SENSEX was being used by several players in the market to
represent the status of the capital markets in India.

xi. In the absence of
appropriate legal transfer of the rights owned by the erstwhile Association of
Persons on the US Trademark registration, the rights of the BSE on the
trademark is not adequately substantiated.

xiii) As per the current
status of the trademark in the registers of the US Trademark office, the
registration stands in the name of Bombay Stock Exchange (Association of
Persons).

“If the ownership of a registered mark changes, the assignee may request that
a new certificate of registration be issued in the name of the assignee for
the unexpired part of the original period. The assignment must be recorded in
the Office, and the request for the new certificate must be signed by the
assignee and accompanied by the fee required by §2.6(a)(8). If available, the
original certificate of registration must be submitted.

xv).
In the absence of the recording of the change of ownership with the US
Trademark office, the trademark registration in USA is not binding on third
parties and BSE does not have any rights which can be rightfully claimed
by a registrant of a US Trademark.

Issue 3: Public
Interest:

i. Every law that is aimed at protecting the rights under the category of
intellectual properties has an in built provision to protect the interests of
the public.

ii. The “Fairuse” concept of
copyright law, the “Compulsory Licensing” of the Patent law and the “Absolute
Grounds for Refusal” in the Trademark law are examples of this importance
accorded by law to the public interest. It is necessary to consider this
aspect also in resolving this dispute.

iii. From the indications
provided in the Business Standard report of 17th December 2006 (where BSE has
claimed that they would be charging royalty for the use of the world SENSEX)
it is clear that the public interest in using the term SENSEX for reporting
and equity analysis is seriously threatened by the attitude of the BSE.

BSE should be prevented from
unduly restricting the market by extending his claimed right on the word
“SENSEX” on the use of the term by others.

Naavi.org therefore supports
Mr Mohoni in his challenge of Trademark rights for BSE.

[P.S: This is not a
reproduction of the defense in domain name dispute regarding sensex.in]